Steven W. Weinrieb has been practicing law for over 30 years and has been a Featured Patent Lot attorney since December of 2016.

WHAT TO LOOK FOR IN A PATENT ATTORNEY

As is the case in all fields, there are some really good practitioners, and then are some not so good practitioners. How to select a really good patent attorney? What do you look for in a patent attorney so as to effectively ensure that you are engaging a really good attorney? Here are several key points that you may want to consider:

1) Has the patent attorney ever been a patent examiner?

1) Has the patent attorney ever been a patent examiner? While this attri-bute is not necessarily a “make” or “break” component as to the capability of the particu-lar patent attorney, having been an examiner is definitely a huge plus. Having been an examiner immediately provides the patent attorney with invaluable experience in dealing with office actions and other procedures during the prosecution of a patent application in order to ensure, as best as possible, the relatively quick allowance of the patent applica-tion. For example, we have often received an office action wherein the examiner has not actually made any prior art rejections but has only made rejections under 35 USC 112 wherein the examiner has alleged that one or more of the claims are indefinite under 35 USC 112. This can of course be very disconcerting to the applicant/client, however, to an experienced patent attorney, this is usually a gift because, in effect, the examiner is telling the applicant and the patent attorney that the application is in condition for allow-ance if you can rectify the issues that the examiner has raised under 35 USC 112. We once reported an office action to the client/applicant and effectively congratulated him on achieving allowance except that we would have to “clean up” the 112 issues – the client thought that there were actually one hundred twelve (112) issues to deal with, however, we quickly informed the client that we simply referred to 35 USC 112 issues as 112 issues, and then explained what we simply needed to do. The bottom line is to amend the claims so that all of the dependent claims were properly dependent from previous claims, that there were no antecedent basis problems wherein, you refer to something that wasn’t previously noted in a claim, and the like. Usually these types of problems can be easily and quickly dealt with by providing the examiner with a copy of your amended claims, asking him to review them in order to ensure that all of the 112 issues have in fact been dealt with to his satisfaction, the examiner can then contact you to confirm that the claims are satisfactory, you can then file your formal amend-ment, and the examiner will then issue the Notice of Allowance.

previous experience as an examiner will benefit you in that you will be able to quickly discern whether or not the cited prior art is truly relevant or not. We recently had an application where the examiner prior art which was totally irrelevant. We called the examiner and arranged an interview with the examiner and his primary examiner. We respectfully presented our arguments to the effect as to what our invention was and that the prior art did not disclose the claimed invention. The primary examiner indicated that he wanted us to amend the claims slightly so as to more clearly define the invention – we had no problem with this because such amendments did not really alter the scope of the claims, and if we could satisfy the examiners and obtain a quick allowance, so much the better. So we made the amendments, submitted a formal amendment, and awaited the Notice of Allowance. To our surprise, the examiner issued a final rejection based up-on the same irrelevant art. So I called the examiner, arranged another interview, again presented our case, reviewed the amendments to the claims that we had already made, our claims still did not read upon the prior art, but the examiners wanted us to clarify the claim language so as to avoid any possible 112 problems. So, we did, and we received the Notice of Allowance. Examiners can sometimes be somewhat difficult to deal with, but you cannot lose your poise because you have to do what’s best for and protect the client. This examiner could have easily telephone us and say that the application was in condition for allowance but wanted to discuss some possible 112 problems, and we could have worked things out without the issuance of a final rejection. Obviously, he chose not to follow this course and to issue the final rejection which caused us to take control of the procedure, contact the examiner, and work out the residual problems so as to in fact achieve allowance. Again, all of this comes from experience of having been an examiner and knowing how examiners think and what they are looking for in order to place an application in condition for allowance.

2) How long has the attorney been in practice?

2) How long has the attorney been in practice? As in any field, the more experience you have, the more likely you are to be successful in obtaining allowance of your patent applications, and this experience enables the patent attorney to not only deal with 112 and cited prior art issues, as well as other procedural problems that may arise, but to also truly determine what the invention is as may be required. We filed a French originated application for one of our clients – the application can be seen from the International Patent Application Publication WO 2012/131496 as well as from United States Patent Application Publication 2013/0340819. We were instructed to file Claims 21-52 as is, and so we did. The US application soon came up for examination and the examiner initially rejected the claims upon the best prior art that she could uncover which was US 5,935,345. At such time, we of course truly reviewed the application and claims and it was apparent to us that the claims were totally unacceptable for allowance in accordance with US patent practice. We even contacted the examiner in order to can-didly ask her whether or not she actually understood the main Claim 21, which we could not in fact understand, and she readily admitted that she could not. The claim included so many incongruous recitations that you truly had no idea what the invention was or what was sought to be claimed and protected. So we went back into the specification and determined that the structure of FIGURES 2 and 3 were at the heart of the inven-tion. We then drafted an entirely new claim which was immediately allowed and which became Claim 1 of US 9,520,515. The point here is that only a truly experienced attorn-ey, with really good claim-drafting skills could have effectively converted original Claim 21, which was totally indecipherable, into a readily clear and understandable Claim 1.

3) Does the attorney have the technical ability?

3) Does the attorney have the technical ability to understand complex sys-tems and to commit such understanding to paper in writing a patent specification and claims? Some examples of relatively complex patents are US 9,433,295, US 8,944,792, and US 7,871,058. All three of these patent systems comprise an extremely large num-ber of component parts and/or cooperative parts which not only need to be properly identified, but also need to be thoroughly explained as to how they operatively coope-rate together in order to achieve the desired objectives of the invention. A patent appli-

cation effectively tells a story – it identifies the shortcomings or disadvantages of known systems and then describes how the invention rectifies those problems or disadvantag-es. But the patent application is not simply a catalog of parts – you have to completely, accurately, and thoroughly explain the invention – you have to not only address the “what” the invention is, meaning, what are the various components, but you also need to explain the “how” of the invention, meaning, how does the invention work, how do the various component parts work together so as to achieve the ultimate objective. Some-times you even need to explain the “why” of the invention, meaning, why it works the way it does, or why is the system configured the way it is as opposed to some other way or in addition to some other way as may be noted in various different embodiments. This is all achieved as a result of the attorney thoroughly understanding the original in-vention disclosure prepared by the inventor and by thoroughly discussing the invention with the inventor.

4) Does the attorney truly have a fundamental understanding?

4) Does the attorney truly have a fundamental understanding of what a patent application is and what the important parts of the patent application are? This is an interesting question. If you ask most patent attorneys what the most important part of a patent application is, they will immediately answer “the claims” – but, surprisingly, they would be right……and wrong! Why? Because it depends where you are in the patent application process. If you have prepared the patent application and getting ready to submit the patent application to the particular Patent Office, the most important part of the patent application is actually the specification, not the claims. Why? Because once the application is filed, the specification cannot be changed in any material or significant manner – therefore, you must ensure that the specification is complete, accurate, and thorough. On the other hand, at least in the US, the claims can always be changed, at any time during the prosecution. You can initially submit twenty (20) claims with the ori-ginal application for the original filing fee, and during the prosecution, you can cancel those twenty (20) claims and insert an entirely new set of twenty (20) claims. This is not necessarily advisable, particularly as a standard practice, because examiners usually do not want to be bothered with reviewing all new claims – they would rather see

amended claims where they can readily see what changes you have made to the claims by means of underlined additions and bracket/strikethrough deletions. The fundamental point, however, is that the claims can always be changed, but not the specification. Some changes to the specification can of course be made – you can correct spelling errors, grammar errors, and the like. You can even insert something into the specification if it is shown in, and therefore supported by, the original drawings which are considered to be part of the original disclosure. Other than those instances, however, no significant changes to the specification are possible – if one part of the specification is incongruous with another part of the specification, you will not be allow-ed to make the corrections and the application will be fatally deficient. If you forgot to explain how something works, and such is needed for an understanding of the invent-tion, the application will be fatally deficient.

On the other hand, returning to our original question, when prosecution is all completed, the claims are the most important part of the patent application because the claims will define your patent, they will define your invention, and they will define your protection. So, the answer to the original question is this: when going INTO the Patent Office, the most important part of the patent application is the specification. When coming OUT of the Patent Office, with the finalized, allowable, patented claims, the claims are the most important part of the application and patent.

5) Is the attorney consistently reliable in providing high-quality patent services to his clients?

5) Is the attorney consistently reliable in providing high-quality patent services to his clients? One paramount ideal that every good and successful patent attorney needs to practice, and needs to incorporate into his practice, is really good communication with his clients. The patent attorney must consistently return all telephone calls, emails, and the like, and provide the client with all pertinent documentation relating to a particular patent application. Another paramount ideal that every good and successful patent attorney must practice, and needs to incorporate into his practice, is to be avail-able to his clients. Often, clients have important deadlines that must be met or else their patent rights, particularly their foreign patent rights, might be jeopardized. The best rule of thumb to practice is to have a patent application on file before an invention is publicly disclosed. This can be achieved by means of a provisional patent application or a non-provisional patent application, or a PCT patent application. We recently had a client contact us that they needed to have a patent application filed immediately because with-in one week, they were going to publicly disclose their invention at a trade show. We received the invention disclosure on a Wednesday afternoon, the trade show was the fol-lowing week, so we discussed the invention with one of the inventors, obtained a thorough explanation of the invention, we drafted the application, a full-blown non-provision-al application, had all of the inventors sign the necessary documents, and the application was filed in the United States Patent Office within twenty-four (24) hours of having received the disclosure. The Vice-President of the company sent us an email stating that it was attorneys like us that made him and his company the success that they are.

Such appreciation makes us, in turn, the successful attorneys that we are.

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